In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application.” The program is set to commence May 19, 2013 (yesterday!), and will run run through September 30, 2013. Continue reading this entry
The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants notice an appreciable difference in RCE processing times.
Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for filing RCEs will increase significantly. I urge stakeholders in the biotechnology and pharmaceutical industry–where RCEs are a normal step in the patent prosecution process–to make their voices heard and urge the USPTO to adopt policies and practices that ensure that Requests for Continued Examination are examined in a timely manner.Continue reading this entry
On January 28, 2013, Judge Brinkema of the U.S. District Court for the Eastern District of Virginia issued a decision in a different Exelixis v. Kappos Patent Term Adjustment (PTA) case (1:12cv574) (Exelixis II) that affirms the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i). Judge Brinkema’s decision in Exelixis II is in direct conflict with the decision issued by her colleague, Judge Ellis, III, in Exelixis v. Kappos (1:12cv96) (Exelixis I) on November 1. 2012. As I wrote previously, the USPTO already has appealed Exelixis I. I expect Exelixis to appeal Exelixis II.Continue reading this entry
A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1, 2012 decision in Exelixis, Inc. v. Kappos. While most have presented straight-forward fact patterns, one complaint caught my attention because it brings to mind how applicants could manipulate the patent prosecution process to ensure that they fall under Exelixis. The USPTO is likely to use examples like these in support of its Federal Circuit appeal.
The Exelixis Decision
As I explained in this article, the Exelixis decision relates to the interpretation of 35 USC § 154(b)(1)(B)(i) and the calculation of PTA when the USPTO took more than three years to grant the patent, and a Request for Continued Examination was filed during prosecution (i.e., the “RCE carve-out” of the “B delay” award). Under the district court’s interpretation of the statute, the carve-out only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Otherwise, as stated by the court, “RCE’s have no impact on PTA if filed after the three year deadline has passed.”
The Hypermed Imaging Complaint
Hypermed Imaging, Inc. filed the Exelixis-based PTA case that caught my eye. According to the complaint, the patent application at issue was filed in March of 2007, the first RCE was filed in June 2010 (more than three years after the filing date), and the patent was issued in July of 2012 (more than five years after the filing date).
What makes this case interesting is that the application was “unintentionally abandoned” between April 2009 and July 2010. Indeed, the first RCE was filed with the Petition to Revive. If the application had not been unintentionally abandoned, it is likely that the first RCE would have been filed before the application had been pending for three years. Under those circumstances, the RCE would have impacted the B delay PTA calculation, even under Exelixis.
While the unintentional abandonment might permit Hypermed Imaging to accrue B delay under Exelixis, it also negatively impacts the total PTA award for the patent. This is because periods of unintentional abandonment constitute “Applicant delay” that is subtracted from USPTO delay when calculating the final PTA award. According to Hypermed Imaging’s complaint, the total days of USPTO delay exceeded the total days of Applicant delay, even with 452 days of Applicant delay during the period of abandonment.
Manipulating Patent Prosecution To Maximize PTA
Prosecution of the applications at issue in the cases being filed now were not manipulated to benefit from Exelixis, because they were prosecuted under the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i), under which the USPTO did not award any PTA for B delay once an RCE was filed. But the fact pattern in this case and others filed in the wake of the Exelixis decision bring to mind how patent prosecution could be manipulated to increase the likelihood that a first RCE will not be filed until after the application has been pending for at least three years, to ensure that the patent can accrue B delay under Exelixis.
Of course, an applicant could not purposefully “unintentionally abandon” an application in order to extend the time to a first RCE, but applicants can extend response periods to prolong prosecution. Any such strategies could backfire, however, if the total number of days of B delay is not greater than the total number of days of Applicant delay required to prolong the filing of the first RCE. Still, for an application that is not close to allowance and/or where the RCE is likely to languish on the USPTO examiner’s docket, the delay tally may be more likely to end up in the applicant’s favor. (Please see this article for a discussion of the USPTO’s latest efforts to address RCE backlog problem.)
As expected, the USPTO has filed a Notice of Appeal in the Exelixis patent term adjustment (PTA) case. As I summarized in this article, in a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law. Under the district court’s interpretation, 35 USC § 154(b)(1)(B)(i) only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Under this interpretation, a significantly greater number of patents may be entitled to significantly greater PTA awards. It will be interesting to see if Exelixis or amici urge a fall-back interpretation of the RCE carve-out, such as the interpretation discussed in this article.
The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity to explain how and why RCEs can be a legitimate step in the patent examination process, and how certain USPTO examination practices can contribute to the need for an RCE. The USPTO will consider written comments received by February 4, 2013.Continue reading this entry
In another significant Patent Term Adjustment (PTA) case decided last week (Novartis AG v. Kappos, Civ. Action No. 10-cv-1138 (Nov. 15, 2012)), the U.S. District Court for the District of Columbia found that Novartis could benefit from “ordinary tolling” but not “equitable tolling” in its efforts to obtain additional PTA for 23 patents. This decision by Judge Huvelle addresses several interesting issues that may arise in other PTA cases.Continue reading this entry
In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia has found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law. Although I wrote about some “RCE carve-out” challenges just last week, the decision here reaches an even broader interpretation of the statute.
Under the district court’s interpretation, 35 USC § 154(b)(1)(B)(i) only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Under this interpretation, a significantly greater number of patents may be entitled to significantly greater PTA awards. It is too early to know whether the USPTO will appeal this decision. In the meantime, patent holders with affected patents may wish to consider pursuing additional PTA in a Request for Reconsideration filed with the USPTO or in a district court proceeding, if the deadline for pursuing such an action has not passed.Continue reading this entry
In a complaint filed October 19, 2012, Biogen Idec MA Inc. joined patent holders such as Exelixis, Inc. and Human Genome Sciences, Inc., who are challenging the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). As I wrote previously, I think these challenges may have merit, and patent holders facing similar PTA calculations may want to consider pursuing similar civil actions against the USPTO.Continue reading this entry
Recently several cases have been filed that challenge the USPTO’s Patent Term Adjustment (PTA) calculations in patents where an RCE has been filed. For example, both Exelixis, Inc. v. Kappos (Civ. Action No. 1:12-cv-00574-LMB-TCB) (E.D. Va. May 25, 2012) and Human Genome Sciences, Inc. v. Kappos (Civil Action No. 1:12-cv-00607-GBL-TCB) (E.D. Va. June 1, 2012) raise the same issue regarding the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i)). I think these challenges may have merit, and patent holders facing similar PTA calculations may want to consider pursuing similar civil actions against the USPTO.Continue reading this entry
Memorial Day Weekend takes on special meaning in the Washington, D.C. area. New flags are placed on the gravesites at Arlington National Cemetery, Rolling Thunder comes to town to remind us of soldiers who are prisoners of war or missing in action, and families and friends honor their loved ones who served this country, visiting the Vietnam War Memorial, Korean War Memorial and World War II Memorial. Memorial Day Weekend also marks the unofficial start of summer, when neighborhood pools open and families head to the beach. After my visit to the Patent Office last week, I wonder if Director Kappos will be hitting the Mount Vernon Trail for a bike ride.Continue reading this entry
As I was cleaning up my office a few weeks ago, I came across a December 2009 article I wrote with my colleague Steve Reid for BNA’s Patent, Trademark & Copyright Journal, entitled “New Patent Office Examination Procedures: Bane or Boon?” The article discusses the then-new changes to the USPTO’s internal procedures for examining applications after a Request for Continued Examination (RCE) has been filed. We predicted that the changes “could introduce significant delays in prosecution,” and the statistics recently reported on Patently-O confirm that we were right. The problem is growing and reaching a crisis—I have RCE applications that have been waiting over a year for examination. How do we hold the USPTO accountable for the growing RCE backlog?Continue reading this entry
The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it is extended.
On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
In today’s Federal Register Notice, the USPTO announces the expansion of its Track I program for fee-based expedited examination to include Requests for Continued Examination (RCEs). While this may be good news on a practical level, it exacts a high price to obtain prompt review of an application that already is midstream in the examination process. The change takes effect immediately, and applies to RCEs filed before, on, or after December 19, 2011.Continue reading this entry
Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applicaitons, they are sympathetic but note that they have a long “special new” docket and are focusing on even older applications under the USPTO’s COPA (Clearing Oldest Patent Applications) program. For a few extreme cases I have used the USPTO Ombudsman program to see if the Ombudsmen have any ideas.
The USPTO has been touting recent data indicating that it continues to make progress in reducing the backlog of new patent applications awaiting examination. At the same time, the number of applications awaiting examination after a Requests for Continued Examination (RCE) has ballooned. I am frustrated by the USPTO’s attitude towards RCEs, and its willingness to relegate them to examination purgatory. Permitting applications to languish midstream in prosecution is inefficient, and drags down innovation, investment and commercialization just as much as delaying examination of new applications.
The latest post on “Director’s Forum,” the public blog of USPTO Director Kappos, is a guest post by Bob Stoll, the Commissioner for Patents, announcing the release of March 2011 data on the USPTO’s Patents Dashboard. Now that we are half way through the current fiscal year, I am glad to see that the USPTO appears to be making at least incremental progress in some areas. However, I am still bothered by some of the data.
The USPTO has issued a proposed rulemaking supporting its plans to implement “Track I” of the three track examination program announced last year. According to the announcement, the USPTO is still considering public comments on other aspects of the program, but wants to move forward with Track I because “the vast majority of public input was supportive.”Continue reading this entry
A patent applicant will file a Request for Continued Examination (RCE) after a final Office Action in order to continue prosecution before the examiner, such as to make claim amendments and/or submit evidence that is not permitted under 37 CFR § 1.116 (which limits the amendments and evidence that will be admitted after final). One focus of the Kappos administration has been to reduce the rate of RCE filings in general, and to address the problem of "RCE churning" by examiners. However, a provision of the MPEP actually encourages an examiner practice that necessitates serial RCEs. If the USPTO is serious about reducing RCE churning, it should eliminate MPEP § 706.07(b).
Checking the status of a U.S. patent application after you’ve filed a Request for Continued Examination (RCE) can be confusing and disheartening. Even if you’ve filed several responses and conducted an examiner interview, the USPTO’s Patent Application Information Retrieval (PAIR) system will show the status of your application as “Docketed New Case—Ready for Examination.” A telephone call to the examiner is not likely to be more helpful. The examiner probably will remind you that he no longer has a set time period for acting on an application after an RCE is filed, but will promise to get to it “soon.” Since I have several applications languishing in post-RCE purgatory, I asked Andrew Mitchell, our Director of IP Technical Support, if he could pull a report on the RCEs that we have filed since the new RCE docketing procedures took effect, and how long it took for the USPTO to issue the next action.